Trademark Dilution

An interesting trademark case was recently decided by the Federal Circuit.

In Coach Services v. Triumph Learning, Coach, Inc., the maker of luxury leather items, most notably leather bags, sued Triumph Learning, a provider of test preparation services under the Dilution Revision Act of 2006, for trademark dilution.

To make out a case for trademark infringement, the plaintiff must show that usage of the defendant’s mark would cause a likelihood of confusion for consumers. However, there is another cause of action available to some mark holders that does not require a showing of likelihood of confusion — one based on trademark dilution, the notion that the infringing mark blurs or tarnishes the plaintiff’s mark.

But one must show that the mark being diluted is “famous”.

In this case, the Federal Circuit threw the law suit out on the ground that “Coach” was not sufficiently “famous”.

While many people have heard of Coach-brand bags, many of us who are not fashion-conscious have not.

What are some examples of marks which may be famous?

Perhaps “Coca Cola”, “Tylonol”, “Microsoft”, “Chrysler”– all of which have acquired nearly universal brand awareness.

‘Linsanity’ Trademark Filed

Basketball sensation Jeremy Lin has spawned several words: Linderella, Linsensation, and Linsanity. In fact, there is even a web site that randomly generates new Lin-related words, “The Jeremy Lin Word Generator”. Here is a sample of a few words it generated:

Linstitution (Lin + Institution)

Linpeccable (Lin + Impeccable)

Goblin (Lin + Goblin)

Linvent (Lin + Invent)

Fun aside, it seems that there is money to be made in the Linsensation. At least three people, including Jeremy Lin himself, have applied for a trademark for “Linsanity” (perhaps the most widely used Lin-associated word.

Of the three applicants, Lin applied last.However, it may be difficult for the others to assert ownership over this
trademark. That said, one of the applicants, Andrew Slayton, has reportedly owned and operated the “Linsanity.com” web site since 2010.

So Slayton may have a good legal argument to trademark the name since he has been using it in commerce for a few years.

It should be interesting to see how this plays out.